Case: 1:24-cv-12537 Document #: 31 Filed: 01/02/25 Page 1 of 13 PageID #:1055

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

ZURU INC., )
) Case No. 1:24-cv-12537
Plaintiff, )
)
v. ) Presiding: Lindsay C. Jenkins
)
THE INDIVIDUALS, PARTNERSHIPS, AND )
UNINCORPORATED ASSOCIATIONS ) Magistrate: Beth W. Jantz
IDENTIFIED ON SCHEDULE "A", )
)
Defendants. )
)

DEFENDANTS’ MOTION TO DISSOLVE THE TRO AND

MEMORANDUM IN SUPPORT THEREOF

Defendants NEWWANDE (Amended Schedule A Doe #117) and XpenJeny (Amended

Schedule A Doe #125), by and through undersigned counsel, hereby move to dissolve the

Temporary Restraining Order (Dkt. 23) (the “TRO”) that issued on December 18, 2024 and was

extended until January 15, 2025 via this Court’s Order (Dkt. 27) dated December 29, 2024.

On December 6, 2024, Plaintiff initiated this action by filing a Complaint alleging

trademark and copyright infringement by Defendants. See Dkt. 1. Subsequently, on December 17,

2024, Plaintiff filed an ex parte Motion for Temporary Restraining Order. See Dkt. 18. As of this

filing, Defendants have not been formally served with summons from the Court. Instead, on

December 21, 2024, Defendants received an email notification from Amazon indicating that, in

connection with this case, Amazon had delisted the relevant products and frozen Defendants’ seller

accounts.

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Plaintiff filed its trademark and copyright infringement complaint without notifying

Defendants that they had been sued. Plaintiff then quickly secured an ex parte TRO without notice

to Defendants, freezing the funds in Defendants’ online merchant accounts, nearly crippling

Defendants’ business. Had Defendants participated in the process from the outset, the TRO would

never have been entered as Plaintiff’ infringement claims have no merit. Further, the scope of the

TRO far exceeds the claims in this case.

I. LEGAL STANDARD

A “preliminary injunction is an extraordinary and drastic remedy, one that should not be

granted unless the movant, by a clear showing, carries the burden of persuasion.” Mazurek v.

Armstrong, 520 U.S. 968, 972 (1997) (emphasis added); see also Winter v. NRDC, Inc., 555 U.S.

7, 24 (2008) (“A preliminary injunction is an extraordinary remedy never awarded as of right.”).

Because an injunction is an extraordinary remedy, the court’s power to issue such relief should be

exercised sparingly. Rizzo v. Goode, 423 U.S. 362, 378 (1976). “A plaintiff seeking a preliminary

injunction must establish that he is likely to succeed on the merits, that he is likely to suffer

irreparable harm in the absence of preliminary relief, that the balance of equities tips in his favor,

and that an injunction is in the public interest.” Winter, 555 U.S. at 20. “[P]laintiffs must carry the

burden of persuasion with respect to the four prerequisites of a preliminary injunction,” and “a

plaintiff's filings must enable the Court to make the requisite, specific findings.” Ozinga v. United

States HHS, No. 13 C 3292, 2018 U.S. Dist. LEXIS 85387, at *12 (N.D. Ill. May 22, 2018)

(emphasis added) (quoting Cox v. City of Chicago, 868 F.2d 217, 219 (7th Cir. 1989)). “If a

plaintiff fails to meet just one of the prerequisites for a preliminary injunction, the injunction must

be denied.” Cox, 868 F.2d at 223 (emphasis added).

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In addition, it is well-established that requests for temporary restraining order are assessed

under the same standard as motions for preliminary injunction.

II. ARGUMENTS

This Court should deny Plaintiff’s TRO motion because Plaintiff fails to establish Court’s

personal jurisdiction over Defendants and Plaintiff fails to show a reasonable likelihood of success

on the merits. Moreover, Plaintiff’s motion should be denied because the scope of the injunctive

relief and asset freeze is unavailable and inappropriate.

A. Plaintiff Failed to Established the Court’s Personal Jurisdiction Over Defendants

Without the establishment of the Court’s personal jurisdiction, the Court cannot bind

Defendants by a preliminary injunction. Adv. Tactical Ordnance Sys., LLC v. Real Action Paintball,

Inc., 751 F.3d 796 (7th Cir. 2014), as corrected (May 12, 2014) (“In order for the district court’s

preliminary injunction to be valid, that court had to have personal jurisdiction over the defendant”).

Plaintiff argues that personal jurisdiction is established because Defendants availed

themselves to this Court’s jurisdiction by “purposefully direct their activities toward and conduct

business with consumers throughout the United States, including within the state of Illinois and

this district, through at least the internet based e-commerce stores accessible in Illinois and

operating under their Seller IDs”. See Dkt. 1 at ¶6.

Notwithstanding the issue that counterfeiting is specific to trademark or copyright

infringement and Plaintiff has not alleged any allegations of counterfeiting against Defendants,

Plaintiff has not provided any evidence that Defendants sold products in the United States or to

residents in Illinois. In fact, with the Temporary Restraining Order being in place, Plaintiff likely

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has additional evidence to advise the Court whether Defendants ever sold any products in this

Court’s jurisdiction, and has failed to provide it.

Chances are the only evidence provided to the Court are screenshots of Defendants’

website and several pending orders (See Dkt 8), which are insufficient to establish jurisdiction. “If

the defendant merely operates a website, even a “highly interactive” website, that is accessible

from, but does not target, the forum state, then the defendant may not be hauled into court in that

state without offending the Constitution.” be2 LLC v. Ivanov, 642 F.3d 555, 559 (7th Cir. 2011)

(Where evidence of 20 Illinois residents having opened accounts on the defendant’s interactive

website was inadequate to support a finding that the Court had personal jurisdiction over said

defendant); Sun Chenyan v. P’ships & Unincorporated Assocs. Identified on Schedule “A”, 2021

WL 1812888 at *5 (N.D. Ill. May 6, 2021) (J. Kendall) (“Finding specific personal jurisdiction

here would likely give rise to universal personal jurisdiction because users from across the country,

except those from a handful of places, could purchase from the eBay Stores”).

B. Plaintiff Does Not Show a Reasonable Likelihood of Success on the Merits

Plaintiff fails to show a likelihood of success on the merits for either trademark or copyright

infringement and thus, is not entitled to temporary relief.

I. Trademark Infringement

In a trademark infringement claim, the plaintiff must demonstrate: (1) the validity of its

trademark; and (2) the infringement of that trademark. Echo Travel, Inc. v. Travel Associates, 1989

U.S. App. LEXIS 4581, at *7 (7th Cir. 1989). Trademark infringement involves assessing whether

the actions of a subsequent user of a substantially similar or identical mark create a likelihood of

confusion among consumers as to the source of the specific goods or services. Id.

1. Plaintiff Has Abandoned the ROBO Fish Mark

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In this case, Plaintiff alleges that Defendants have infringed upon its purported trademark,

"ROBO FISH." However, Plaintiff cannot demonstrate that it is the rightful owner of the mark.

An examination of the ROBO Fish trademark registration certificate submitted by Plaintiff

reveals a clear discrepancy in ownership. The certificate, issued by the USPTO, identifies

“CREATIVE IMPACT INC.” as the registered owner of the mark, not Plaintiff (see Dkt. 9, Exhibit

1A). Plaintiff has failed to provide any additional documentation, beyond the registration

certificate, to substantiate its ownership of the mark. This discrepancy raises serious doubts about

the validity of Plaintiff's trademark claim. Without appropriate documentation or proof of

ownership recorded with the USPTO, Plaintiff cannot establish enforceable trademark rights.

Furthermore, under 15 U.S.C. § 1127, a trademark is considered “abandoned” if it is not

used in commerce for three consecutive years. In its Complaint, Plaintiff asserts that it “has used

the ROBO FISH Mark since August 1, 2022.” (Dkt. 1, at *156). However, the registration

certificate for the ROBO Fish mark, provided by Plaintiff, indicates a registration date of

November 26, 2013. (Dkt. 9, Exhibit 1A). This reveals an almost nine-year period of apparent non-

use, far exceeding the three-year standard for abandonment under federal law. As such, Plaintiff

must be deemed to have abandoned the mark.

Plaintiff’s inability to establish ownership or demonstrate consistent use in commerce

further undermines its claim, and its allegations of trademark infringement should be dismissed.

2. Generic and Descriptive Terms

Even if the Plaintiff establishes that it is the rightful owner of the mark and has not

abandoned it, the Defendants' actions do not amount to trademark infringement. The term used by

the Defendants in their business operations is "robot fish," as shown in their product listings.

Notably, "robot fish" is not used as a mark but as part of a generic or descriptive phrase to describe

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the product being sold—a mechanically designed fish toy that swims when placed in water. The

product listings, provided in Exhibit 1, show no emphasis on the term "robot fish" through

capitalization, unique font, or distinctive coloring.

A generic term is commonly used to name a type of goods. See A.J. Canfield Co. v. Vess

Beverages, Inc., 796 F.2d 903 (7th Cir. 1986). Unlike a trademark, which identifies the source of

a product, a generic term specifies the genus of which the product is a species and does not identify

a particular source. See Gimix, Inc. v. JS & A Group, Inc., 699 F.2d 901, 905 (7th Cir. 1983). In

this case, the term "robot fish" generically describes a type of product—a toy fish—and does not

identify the Plaintiff's brand.

A merely descriptive term, in contrast, describes a characteristic or ingredient of a product.

Gimix, 699 F.2d at 906. Here, the Defendants use "robot fish" descriptively to indicate a feature of

their product. A term not intended to be used as a mark is unlikely to cause consumer confusion

concerning the Plaintiff’s registered trademark.

3. Likelihood of Confusion

The term "robot fish" is used generically in a multi-word product description and is unlikely

to confuse consumers or potential buyers regarding the source of the goods. Critically, the term is

not used as a trademark or source identifier in the Defendants’ product listings or packaging.

Furthermore, the Defendants’ product packaging does not include the terms "robot fish" or "ROBO

FISH," which further differentiates their products from the Plaintiff’s.

Defendants’ product listings also feature hyperlinks such as "Visit the LAVIZO Store" or

"Brand: XpenGeny," directing consumers to other products sold under these distinct brands. This

demonstrates that Defendants are not attempting to associate their products with the Plaintiff’s

trademark or to capitalize on its reputation.

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4. Conclusion

Plaintiff’s failure to establish ownership or demonstrate consistent use in commerce,

combined with the fact that Defendants’ use of 'robot fish' is generic and descriptive, does not

qualify as trademark use and is unlikely to result in consumer confusion. Therefore, Plaintiff

cannot show a reasonable likelihood of success on the merits of its trademark infringement claim.

II. Copyright Infringement

In order to establish copyright infringement or a likelihood of success on the merits, a

plaintiff must prove: “(1) ownership of a valid copyright, and (2) copying of constituent

elements of the work that are original.” Feist Publ'ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340,

361 (1991).

1. Plaintiff’s Ownership of a Valid Copyright Is Unsupported

The Plaintiff’s copyright registration certificate (“Certificate”) lists six works under the

titles “ROBOFISH PURPLE (SCULPTURE)” (VA 2-249-214), “ROBOFISH RED

(SCULPTURE)” (VA 2-253-396), “ROBOFISH BLUE (SCULPTURE)” (VA 2-253-394),

“ROBOFISH AQUA (SCULPTURE)” (VA 2-253-392), “ROBOFISH BROWN (SCULPTURE)”

(VA 2-253-391), and “ROBOFISH ORANGE (3d Sculpture)” (VA 2-248-953) (collectively,

“Asserted Work”), all purportedly published on May 9, 2012. However, the effective dates of

registration for these works are in April or May of 2021—nine years after the first publication date.

See Dkt. 9.

Under 17 U.S.C. §410(c), a certificate of registration made before or within five years of

first publication constitutes prima facie evidence of copyright validity and the facts stated therein.

Here, the registrations were filed well beyond the five-year window, and therefore, the Certificate

does not enjoy the evidentiary presumption of validity afforded by timely registration.

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Without this presumption, the Plaintiff bears the burden of presenting affirmative evidence

to substantiate its claims of copyright validity, including authorship and the date of publication.

However, Plaintiff has provided no evidence beyond the Certificate itself to corroborate its

ownership of the Asserted Work. See generally Dkts. 1, 9. This lack of evidence is particularly

problematic because the Plaintiff exclusively controls the information necessary to support its

ownership claims. The failure to produce any corroborating documentation or testimony—despite

its apparent availability—casts serious doubt on the truthfulness of the Certificate’s stated facts.

In conclusion, Plaintiff has not met its burden of proving ownership of the Asserted Work,

leaving its claims unsubstantiated and unsupported by credible evidence.

2. Defendants Did Not Copy Any “Constituent Elements of the Work That Are

Original”

The core principle of copyright law is originality. As the Supreme Court explained in Feist

Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 345 (1991), “the sine qua non of

copyright is originality.” To qualify for protection, “a work must be original to the author,”

meaning it must have been independently created and exhibit at least some minimal degree of

creativity. Id. at 345–46. This requirement is both statutory and constitutional. See Mid America

Title Co. v. Kirk, 59 F.3d 719, 721 (7th Cir. 1995) (citing Feist, 499 U.S. at 347).

In this case, Plaintiff’s Certificate identifies the Asserted Work as a collection of fish toys

combining graphic design patterns, colors, and three-dimensional shapes. See Dkt. 9. Plaintiff

appears to claim that originality lies in both the two-dimensional graphic elements and the three-

dimensional shapes of the toys. However, evidence demonstrates that the Asserted Work’s shape

lacks originality.

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Defendants have discovered a prior design patent application filed with the China Patent

Office on April 17, 2012, which was published on November 20, 2013 (“Original Work”). A true

and correct copy of the registration, along with an English translation, is attached as Exhibit 2. The

design patent registration shows that the patent owner is a Chinese company named “Guangzhou

Yuhe Toys Industrial Co., Ltd.” and the author is “Mathew Peter Maubray.” A comparison chart

of the Asserted Work and the Original Work is included as Exhibit 3. The chart demonstrates that

when the Asserted Work’s graphic patterns and colors are removed, its shape is identical to that of

the Original Work. This suggests that Plaintiff did not independently create the shape but instead

derived it directly from the Original Work, adding graphic patterns and colors to embellish it.

Unless Plaintiff can provide evidence that the Asserted Work was created and published

prior to the Original Work, it is reasonable to conclude that Plaintiff merely added superficial

details to the Original Work. Consequently, the Asserted Work lacks originality in its shape and

warrants copyright protection, if any, only for the graphic patterns and colors subsequently added.

Furthermore, Defendants’ products do not replicate any original elements of the Asserted

Work. A visual comparison reveals that Defendants’ products differ entirely in their graphic

patterns and colors. They are not substantially similar to the Asserted Work, nor do they copy any

“constituent elements of the work that are original.”

Additionally, Plaintiff’s registration may be invalid because of its failure to disclose the

Original Work to the Copyright Office. The knowing omission of material facts that could have

led to a rejection of the copyright application renders the registration invalid. As held in Russ

Berrie & Co. v. Jerry Elsner Co., 482 F. Supp. 980, 988 (S.D.N.Y. 1980), such an omission

“constitutes reason for holding the registration invalid and thus incapable of supporting an

infringement action.”

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In conclusion, the Asserted Work lacks originality in its three-dimensional shape, and

Defendants have not copied any original elements of the Asserted Work. Even if Plaintiff’s

copyright claims are limited to the graphic design elements, Plaintiff has failed to demonstrate any

copying by Defendants. Furthermore, Plaintiff’s failure to disclose the Original Work to the

Copyright Office provides an additional basis for invalidating the registration and precludes

enforcement of the copyright.

C. Scope of the Injunctive Relief and Asset Freeze is Unavailable and Inappropriate

To encourage prompt registration of copyrights, Congress enacted Section 412 of the

Copyright Act. UIRC-GSA Holdings Inc. v. William Blair & Co., L.L.C., No. 15-CV-9518, 2018

WL 11473349, at *2 (N.D. Ill. Apr. 3, 2018) (St. Eve.). Section 412 provides that “no award of

statutory damages or of attorney's fees, as provided by sections 504 and 505, shall be made for ...

any infringement of copyright commenced after first publication of the work and before the

effective date of its registration, unless such registration is made within three months after the first

publication of the work.” 17 U.S.C. § 412.

Plaintiff raises copyright infringement allegations against Defendants in its Complaint.

However, Plaintiff waited nine years from its first publication to register the copyright.

Consequently, statutory damages should not be granted except for actual damages. See Milburn v.

PDD Holdings, Inc., No. 23-CV- 04785, 2024 WL 3177639, at *7 (N.D. Ill. June 26, 2024)

(“argument fails in the face of what Plaintiff has actually pled. Because Plaintiff did not obtain a

registration for the Work within three months of first publication, and because the Complaint

pleads that Defendants’ alleged infringement commenced after publication of the Work, but before

the copyright registration, Plaintiff's claims for statutory damages and attorneys’ fees under the

Copyright Act are dismissed”.)

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The Supreme Court has held that district courts generally lack the authority “to issue a

preliminary injunction preventing [a defendant] from disposing of [its] assets pending adjudication”

of a plaintiff’s claim for money damages.” Grupo Mexicano de Dessarrolo v. Alliance Bond Fund,

527 U.S. 308, 333 (1999). This has been affirmed in the Seventh Circuit as well. See CSC Holdings,

Inc. v. Redisi, 309 F.3d 988, 996 (7th Cir. 2002); See also Micnerski v. Sheahan, 2002 WL

31415753 at *1 (N.D. Ill. Oct. 25, 2002) (“federal district courts do not have the power to grant

preliminary injunctions to prevent a defendant from transferring assets in which no lien or

equitable interest is claimed”). Prejudgment asset restraints, therefore, are limited to cases seeking

equitable relief, where they are narrowly drawn and limited only to what is reasonably necessary

to secure the (future) equitable relief.” Deckers Outdoor Corp. v. P’ships & Unincorporated

Assocs. Identified on Schedule A, 2013 WL 12314399 at *2 (N.D. Ill. Oct. 31, 2013).

Thus, asset freeze sought by Plaintiff prior to a judgement should be limited to amounts

that the plaintiff is reasonably likely to recover pursuant to an equitable accounting of profits in

this case. 17 U.S.C. § 504(a); 15 U.S.C. § 1117; Cengage Learning, Inc. v. Doe 1, 2018 WL

2244461 at *3 (S.D.N.Y. Jan. 17, 2018); see also Deckers, 2013 WL 12314399, at *2 (“[W]here

equitable relief is sought, the appropriate scope of prejudgment restraint must be limited only to

what is reasonably necessary to secure the (future) equitable relief. For example, where (as here)

a litigant seeks the equitable remedy of an accounting of profits, then if the amount of the profits

is known, then the asset freeze should apply on to that specific amount, and no more... In other

words, the asset restraint order must be limited only to the extent that is needed to secure the

equitable remedy; the scope of the exception (to the general ban on prejudgment restraint) is

limited by the scope of the exception’s rationale”).

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The current asset restraint froze all funds in Defendants’ accounts, regardless of source.

Given the statutory damages unavailable to Plaintiff as described above and Plaintiff’s failure to

prove to the Court the amount in actual damages it could recover from Defendants based on alleged

sales of infringing products, the Court should deny Plaintiff’s request to restrain Defendants’

financial accounts. Micnerski, 2002 WL 31415753 at *1 (“federal district courts do not have the

power to grant preliminary injunctions to prevent a defendant from transferring assets in which no

lien or equitable interest is claimed”).

Therefore, the asset restraint should be modified and limited to only the amount

recoverable by Plaintiff, should they be successful in trademark or copyright infringement against

Defendants.

III. CONCLUSION

For the reasons set forth above, the Court should vacate the extended temporary restraining

order, at least as it relates to Defendants, given the Court’s lack of personal jurisdiction over them,

Plaintiff’s failure to show a reasonable likelihood of success on the merits, and scope of the

injunctive relief and asset freeze is unavailable and inappropriate. However, if the Court is inclined

to grant Plaintiff temporary reliefs, Defendants’ assets should be released, or alternatively, the

asset restraint modified to reflect the relief available to Plaintiff. To continue to allow Plaintiff to

maintain a complete asset restraint on Defendants’ financial accounts would be inequitable,

contrary to the principles of law stated herein, and unfairly prejudicial to Defendants.

Dated: December 30, 2024 Respectfully submitted,

/s/ Liping Peng

Liping Peng
JS Law

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339 Pearson Cir.

Naperville, IL 60563
sellersusip@gmail.com
tro@jslawlegal.com
(917) 773-1868

ATTORNEY FOR DEFENDANTS

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